A previous post discussed a court decision upholding a jury verdict that Toyota’s Prius, Highlander SUV and LexusRX400h infringed a patent owned by Paice, a company that owns several patents relating to hybrid drive train technology. Toyota has filed a writ of certiorari, asking the U.S. Supreme Court to take the case and reverse the lower court decisions that it is liable for patent infringement.
The key issue on appeal is whether statements in Paice’s patent criticizing previous hybrid technology – a system that Toyota now uses in its hybrid vehicles – should preclude a finding that Toyota’s use of one key aspect of the criticized technology infringes the patent as an equivalent system. U.S. Patent No. 5,343,970 (‘970 patent) is directed to a hybrid drive train that uses a microprocessor and a controllable torque transfer unit that accepts torque input from both an internal combustion engine and an electric motor.  A bevel gear assembly regulates torque input, and the Paice patent criticizes expired Berman patents that used an alternative “planetary” gear system to regulate torque input, calling them “complex” and “difficult to manufacture economically.” Significantly, Toyota uses this planetary design in its vehicles. A clear and unequivocal disavowal of the planetary system would prevent Paice from asserting that someone using that system infringed the ‘970 patent under the doctrine of equivalents because a patentee cannot state that particular components are not part its patent and later assert that those same components infringe the patent.
The U.S. Court of Appeals for the Federal Circuit found that Paice’s statements were not a clear disavowal of a planetary gear system because it was not obvious which portion of the Berman drive train (motors, engine, gear system or control system) was being criticized. The court said that the patentee must have “clearly excluded” the specific subject matter that is later sought to be recaptured under the doctrine of equivalents for this type of estoppel to apply.Â
In its petition to the Supreme Court, Toyota argues that this “clearly excludes” language constitutes a new, heightened standard and creates a “reverse presumption” that rewards vague patent drafting and destroys the notice function of patents. Toyota contends that a person of ordinary skill in the art would recognize that Paice disavowed the planetary gear system. Paice argues in its opposition brief that Toyota simply failed to meet its burden of proving that the statements in its patent clearly disclaimed the gear system component and points out that the language at issue does not mention the gear system. Paice also disputes the contention that any new standard or presumption was created, and asserts that the Federal Circuit followed the established standard for proving a disavowal based on statements in a patent.
The odds are very slim that the Supremes will hear this case. The Court takes only a tiny percentage of the cases it is asked to hear, and it has heard several high-profile patent cases in the last couple of years. Also as Paice pointed out in it brief, there are no inter- or intra-court disputes, academic discussions, or legislative activity on this issue.Â
